The Naked Cowboy
(Click here for prior blog posts regarding Burck’s lawsuit against against Mars Incorporated, the maker of M&Ms candies, over an M&M ad featuring a cartoon M&M guitar-playing street performer wearing a cowboy hat, boots, and underwear – all reminiscent of Burck’s alter ego).
Burck obtained a registration for the mark NAKED COWBOY for various entertainment services on April 9, 2002. He obtained second registration on September 2, 2003, for a design mark resembling The Naked Cowboy’s likeness (pictured below) for various clothing items including, of course, underwear.
Apparently, Burck has threatened to take legal action against Gameloft for trademark infringement. Thus, Gameloft took preemptory action by filing for a declaratory judgment of non-infringement.
Gameloft seeks a declaration that its Nick character is protected by the First Amendment and does not infringe on Burck’s trademark rights. Gameloft describes Nick as a “minor part of the game” representing “a humorous caricature that imitates the style of Times Square performers for comic effect and is not a literal depiction of the Naked Cowboy.”
By filing this case in California (as opposed to waiting until Burck takes action – likely in New York where Burck is located), Gameloft may be hoping to take advantage of last year’s decision Ninth Circuit decision in E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., __ F.3d __ (9th Cir. Nov. 5, 2008) (blogged here). In that case, the Ninth Circuit ruled that the First Amendment protected the makers of the video game Grand Theft Auto: San Andreas from trademark infringement claims brought by the owner of an East Los Angeles strip club named “Play Pen” over a depiction of a fictional “East Los Santos” strip club named “Pig Pen” in the video game. The court held that Rock Star’s modification of the “Play Pen” mark had some artistic relevance in the underlying work and was not explicitly misleading, and thus was protected by the First Amendment.